Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA786024
`
`Filing date:
`
`11/30/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91230405
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Plaintiff
`Duke University
`
`SUSAN FREYA OLIVE
`OLIVE & OLIVE PA
`PO BOX 2049
`DURHAM, NC 27702
`UNITED STATES
`emailboxTTAB@oliveandolive.com, solive@oliveandolive.com
`
`Motion to Strike Pleading/Affirmative Defense
`
`Brian J. Crews
`
`emailboxTTAB@oliveandolive.com, solive@oliveandolive.com
`
`/bjc/
`
`11/30/2016
`
`Attachments
`
`20161130 Mtn to Strike w exhibit a.pdf(104553 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA786024
`
`Filing date:
`
`11/30/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91230405
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Plaintiff
`Duke University
`
`SUSAN FREYA OLIVE
`OLIVE & OLIVE PA
`PO BOX 2049
`DURHAM, NC 27702
`UNITED STATES
`emailboxTTAB@oliveandolive.com, solive@oliveandolive.com
`
`Motion to Strike Pleading/Affirmative Defense
`
`Brian J. Crews
`
`emailboxTTAB@oliveandolive.com, solive@oliveandolive.com
`
`/bjc/
`
`11/30/2016
`
`Attachments
`
`20161130 Mtn to Strike w exhibit a.pdf(104553 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`Before the Trademark Trial and Appeal Board
`Opposition No. 91230405
`
`Duke University,
`Plaintiff-Opposer
`
`vs
`
`Steven Klick,
`
`Defendant-Applicant
`
`MOTION TO STRIKE ANSWER TO
`NOTICE OF OPPOSITION
`
`Attorney Reference: DUKU9437
`
`
`
`
`
`
`
`
`
`Opposer, Duke University (“Opposer”), moves to strike Applicant’s answer to the notice of
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`cancellation (“answer”), on the grounds that the pleading is legally insufficient and that service upon
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`Opposer was improper.
`
`This motion is made within the time prescribed by F. R. Civ. P. Rule 12(f), 37 CFR § 2.119(c)
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`and TBMP § 506.02 and is thereby timely. No copy of the pleading was served upon Opposer, but
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`this motion nonetheless is filed within 21 days of the date when the answer was filed with the Board
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`and more than 21 days of the date when a courtesy copy was provided to Opposer by the Board.
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`BACKGROUND/STATEMENT OF THE CASE
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`On October 3, 2016, Opposer filed the Notice of Opposition and served a copy by first-class
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`mail on Applicant. That same day, the Board issued its institution order containing the trial schedule
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`and setting a deadline of November 12, 2016, for Applicant to file an answer.
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`On November 11, 2016, Applicant filed with the Board a document purporting to be its
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`answer, but did not include any certificate of service and apparently did not serve any copy of the
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`answer on Opposer.
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`On November 15, 2016, the Board issued an order noting that
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`Applicant’s answer includes a statement regarding service. However, the
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`1
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`
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`statement does not indicate the manner of service and does not indicate proof
`of service of a copy of same on counsel for Opposer, as required by Trademark
`Rule 2.119.
`
`Opp. Docket No. 5, at 1. The Board sent to Opposer a copy of Applicant’s purported answer. Oppose
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`has not received any copy of the pleading from Applicant.
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`Upon reviewing the Applicant’s filing, Opposer noted its insufficiency and now brings this
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`motion to strike the same pursuant to TBMP § 506.01 (“upon motion, or upon its own initiative, the
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`Board may order stricken from a pleading any insufficient defense or any redundant, immaterial,
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`impertinent, or scandalous matter”), and on account of the improper service.
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`The Answer is Legally Deficient
`
`I.
`
`
`ARGUMENT
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`Applicant’s answer is legally deficient, nonresponsive, incoherent, and immaterial. The
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`result is that Opposer has no way to determine what issues are conceded and which are
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`contested, and cannot effectively proceed.
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`Although no particular format is required for an answer, it must be responsive to the
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`notice of opposition:
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`[T]he answer must contain admissions and/or denials of the allegations in
`the complaint and may include any defenses to those allegations.
`
`…
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`[The] answer shall state in short and plain terms the applicant’s defenses
`to each claim asserted and shall admit or deny the averments upon which
`the opposer relies. If the applicant is without knowledge or information
`sufficient to form a belief as to the truth of an averment, applicant shall so
`state and this will have the effect of a denial.
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`TBMP §311.02. In like manner, the Federal Rules of Civil Procedure, followed by this
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`Board, require that when responding to a pleading,
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`2
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`
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`a party must: (A) state in short and plain terms its defenses to each claim
`asserted against it; and (B) admit or deny the allegations asserted against it
`by an opposing party.
`
`F.R.Civ.P. 8(b)(1).
`
`When pleadings are deficient, the Board may “order stricken from a pleading any
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`insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.” TBMP
`
`§506.1. While in some instances, pleadings are generally acceptable but have minor deficiencies
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`that can be addressed through interpretation (see, e.g., Turner Entertainment Co. v. Ken Nelson,
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`38 USPQ2d 1942 (TTAB 1996)), the answer here is so incoherent that attempts at interpretation
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`by the Board would prove futile and striking it in its entirety is the only viable option.
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`More specifically, Applicant’s answer is entirely unresponsive to the numbered claims of
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`the notice of opposition and seems to consist wholly of the filing receipt for the application, as
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`forwarded to Applicant by LegalZoom. There are no references to the notice of opposition, and
`
`no admissions or denials of the allegations. This is hardly surprising since the correspondence
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`appears to have been created at the time of filing of the application, which was long prior to the
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`date of the notice of opposition. As a result, the content of the purported answer is irrelevant and
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`immaterial to the allegations of the notice of opposition.
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`Because of the deficiencies of the answer, Opposer cannot base any rational discovery on
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`it. Discovery would need to proceed blindly, creating the likelihood for redundancy in requests
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`for admission and other duplicative discovery requests, all which will waste the resources of the
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`involved parties and those of the Board.
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`Due to the deficiencies of the answer and its prejudicial impact on Opposer, Opposer
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`moves the Board to strike Applicant’s answer in its entirety.
`
`3
`
`
`
`II.
`
`The Manner of Service is Improper
`
`TBMP §113 and 37 CFR §2.119 clearly establish that “every paper filed in the United
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`States Patent and Trademark Office in inter partes cases, including notice of appeal, must be
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`served upon the other parties.” Also, “proof of such service must be made before the paper will
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`be considered by the Office.” Id. Although TBMP §113 permits many methods of acceptable
`
`service, all methods require that “service of papers must be on the attorney or other authorized
`
`representative of the party if there be such or on the party if there is no attorney or other
`
`authorized representative.” A certificate of service is required in all cases.
`
`the Board will accept, as prima facie proof that a party filing a document
`in a Board inter partes proceeding has served a copy of the document upon
`every other party to the proceeding, a statement signed by the filing party,
`or by its attorney or other authorized representative, clearly stating the
`date and manner in which service was made. The statement should also
`specify the name of each party or person upon whom service was made,
`and the address.”
`
`TBMP §113.03.
`
`Applicant’s answer was filed via ESTTA on November 11, 2016, but was never served
`
`on the Opposer or its attorney. Although Applicant apparently copied a form intended for use
`
`when pleadings are served, he left out all salient information required to be provided. The
`
`certificate of service reads:
`
`I hereby certify that a true and complete copy of the foregoing (insert title
`of submission) has been served on (insert name of opposing counsel or
`party) by mailing said copy on (insert date of mailing), via First Class
`Mail, postage prepaid (or insert other appropriate method of delivery) to:
`(set out name and address of opposing counsel or party).
`
`Signature___Steven Klick
`
`Date______11/10/2016
`
`4
`
`
`
`The “insert ____” data was recited precisely as set out above, rather than supplied with pertinent
`
`data. And in fact, the answer apparently was not served, since neither Opposer nor its attorney
`
`has received a copy of the answer, other than the copy forwarded as a courtesy by the Board.
`
`The Board also took notice of Applicant’s failure to comply with the rules for service on
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`November 15, 2016, and instructed the Applicant that compliance with Trademark Rule 2.119 is
`
`required before it will be considered by the Board. Opp. Docket No. 5. No further
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`correspondence from Applicant has been forthcoming.
`
`Although Opposer and the Board typically assume that such behavior by applicants is not
`
`willful, this is not the first time Applicant has been admonished by the Board for the same failure
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`to make service on an opposer. In Opposition 91229347, on September 14, 2016, the Board
`
`admonished Applicant:
`
`Applicant’s answer is noted. The filing fails to include proof of service on
`the opposing party as required by Trademark Rule 2.119(a). All future
`filings must include proof of service. Copies of papers filed in this
`proceeding must be accompanied by a signed statement indicating the date
`and manner by which such service was made. See TBMP §113.03.
`
`See, Attached Ex. A.
`
`Accordingly, Opposer respectfully submits that Applicant’s failure here is not a result of
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`oversight but is instead an intentional disobedience, intended to maximize the prejudice to
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`Opposer while avoiding any significant work on the part of Applicant. As a result, Opposer
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`moves the Board to strike the answer in its entirety on this ground as well.
`
`5
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`
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`CONCLUSION
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`WHEREFORE, Opposer requests that the Answer filed on November 11, 2016, be stricken
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`from the record on the grounds that the pleading is unresponsive, immaterial and irrelevant and
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`entirely legally insufficient; and on the further grounds that service on Opposer was improper in that
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`there was neither actual service on Opposer or any proof of service provided with the pleading.
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`This 30th day of November 2016.
`
`OLIVE & OLIVE, P.A.
`Attorneys for Opposer
`
`/Brian J. Crews/
`Brian J. Crews
`
`N.C. Bar No. 45964
`/Susan Freya Olive/
`Susan Freya Olive
`
`N.C. Bar No. 7252
`
`P. O. Box 2049
`Durham, North Carolina 27702
`Telephone: (919) 683-5514
`Email: emailboxTTAB@oliveandolive.com
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE
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`The undersigned certifies that a true copy of the foregoing pleading has been served upon
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`Applicant by depositing a copy of the same in the United States mail, first class postage prepaid,
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`addressed to Applicant at the correspondence address of record, to wit:
`
`Steven Klick
`610 NW 73rd St.
`Seattle, WA 98117-4951
`
`this the 30th day of November 2016.
`
`
`/Brian J. Crews/
`Brian J. Crews
`Olive & Olive, P.A.
`Attorneys for Opposer
`
`P. O. Box 2049
`Durham, North Carolina 27702
`Telephone: (919) 683-5514
`Email: emailboxTTAB@oliveandolive.com
`
`
`
`7
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`Before the Trademark Trial and Appeal Board
`Opposition No. 91230405
`
`
`
`
`
`MOTION TO STRIKE ANSWER TO
`NOTICE OF OPPOSITION
`
`Attorney Reference: DUKU9437
`
`
`
`
`EXHIBIT A
`
`Duke University,
`Plaintiff-Opposer
`
`vs
`
`Steven Klick,
`
`Defendant-Applicant
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`
`
`
`
`
`
`
`
`
`
`
`Mailed: September 14, 2016
`
`
`
`
`
`
`
`Opposition No. 91229347
`
`Commonwealth Wholesale Distributors LLC
`
`v.
`
`Steven Klick
`
`
`Amy Matelski, Paralegal Specialist:
`
`
`
`Applicant’s answer to the notice of opposition, filed September 9, 2016 is noted.
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`The filing fails to include proof of service on the other party, as required by
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`Trademark Rule 2.119(a). All future filings must include proof of service.
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`Copies of all papers filed in this proceeding must be accompanied by a signed
`
`statement indicating the date and manner in which such service was made. See
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`TBMP § 113.03. The statement, whether attached to or appearing on the paper
`
`when filed, will be accepted as prima facie proof of service, must be signed and dat-
`
`ed, and should take the form of a certificate of service as follows:
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`I hereby certify that a true and complete copy of the foregoing (in-
`sert title of submission) has been served on (insert name of opposing
`counsel or party) by mailing said copy on (insert date of mailing), via
`First Class Mail, postage prepaid (or insert other appropriate meth-
`od of delivery) to: (name and address of opposing counsel or party).
`
`Signature______________________________
`Date___________________________________
`
`
`
`
`
`Opposition No. 91229347
`
`
`To expedite this matter, the parties are directed to the following link to
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`TTABVUE where they may view a copy of the filing: http://ttabvue.uspto.gov.
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`Conferencing, disclosure, discovery and testimony dates remain as previously set
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`forth in the Board’s order dated August 3, 2016.
`
`
`
`2
`--
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